2023 was a busy year for the superheroes from the DC Comics universe at the UK and EU trade mark registries.

We previously looked at a case from June relating to the Batman Logo  where the validity of a registration for that sign as an EU Trade Mark was (unsuccessfully) challenged.  It highlighted some interesting fundamental issues about trade marks including that to function as a trade mark, the sign must be capable of indicating commercial origin. Yet it was argued in that case: what does the consumer perceive that sign as indicating especially when is appears on a child’s Batman costume for example?

The two further cases – relating to the superheroes BLACK ADAM and SUPERMAN - highlight other issues in the obtaining of protection and enforcement of these famous and lucrative names as trade marks.

Black Adam

This case is another example of an objection to a DC Comics trade mark application for a superhero name in a merchandise class. But, unlike the inherent registrability case of the Batman Logo above, this time the opposition is based on a prior trade mark registration owned by a third party.

In October, in UKIPO decision O-1001-23 a trade mark application for BLACK ADAM for various soft drinks survived an opposition by drinks company Sociedad Anonima Damm based on a claim of a likelihood of confusion with their beer brand AK DAMM.

Whilst holding there was at least some degree of similarity between beer and certain non-alcoholic/ soft drinks applied for in the application, the UKIPO felt the marks AK DAMM and BLACK ADAM had important visual and aural differences and were conceptually dissimilar so there was no risk of confusion.

In this case the fame of the superhero (known - other than to super fans - by most (if at all) through being played by Dwayne Johnson in the 2022 movie) was not directly relevant. Instead, it was about whether the scope of the beer brand’s mark was wide enough (were the marks formally similar enough to be mistaken one for the other or to be seen as a brand extension) to protect against the later entrant to that commercial area BLACK ADAM.

It is important to consider in advance if even an established name (in say the entertainment space) is clear to be used in a new area.

Given the differences in the marks and commercial areas, this does feel like a case suitable for settlement rather than needing to be fought to a decision.

The opposition failed and the BLACK ADAM mark for this drinks merchandise registered.  

Superman

This case involved DC Comics enforcing a superhero trade mark and looked at the issue of when using or incorporating in your own trade mark what might otherwise be a descriptive phrase creates an unlawful association with another brand (in this case the Superman brand).

In November, in UKIPO decision O-1066-23 DC Comics successfully opposed a trade mark application for for transport services by Chelsea Wealth Ltd. The opposition was based on trade mark registrations for the word SUPERMAN and claimed:

1. unfair advantage of the reputation of that mark for films, comics, clothes and toys;
2. Passing Off;
3. there was a likelihood of confusion with the sign SUPERMAN which was protected as a well-known mark under the Paris Convention; and
4. the application was filed in bad faith.

The taking unfair advantage of reputation ground is especially interesting. It is important to remember this ground can catch applications for signs in very different goods/services to those for which the brand is reputed (e.g. transport vs comics/films). What is important, aside from proving the brand has repute (as was successfully done by DC here), is establishing the “link” between that repute and the sign. Key indicators of that are the strength of the reputation, the similarity of the marks and the differences between the reputed and applied for services. Then the damage – the unfair advantage being taken - needs to be shown. This is an interesting case as at first blush one might think there is a good argument that the applied for sign “SV Super Man With a Van” is simply a use of or play on the common phrase and descriptive i.e. that this “man with a van” (a term for a service which many of us may have used to move our stuff in the past) is “super” and so is not seeking to take advantage of or “free riding” on the DC Comics repute. This potential “defence” is unlikely to be the case for most superhero names such as for example BATMAN (unless perhaps for a brand for a sole trader in Chiroptera rescue) but non-superhero meaning to the words superman (and indeed wonder woman) are relevant in the scope of trade mark protection of such brands. However (in what is quite rare in trade mark registry cases which often look at the theoretical position not the actual use of the mark applied for on the market) DC were able to evidence surrounding circumstances that indicated there was an intention by the applicant to connect with the Superman fame. Not only could they point to a previous application for this sign which had been withdrawn after challenge by DC, but also online use including Instagram posts that showed much closer references by the applicant to the DC Superman imagery such as

and   .

Taking this into account the UKIPO held there was an attempt to create an association with the Superman brand to benefit their business and so there was an unfair advantage being taken and the trade mark application was refused.  

I am sure there will be many more interesting trade mark cases involving superheroes in the New Year. In the meantime for commentary on previous “superhero” cases see our post on the 2022 case of WONDER WOMAN v WONDER MUM and BATMAN v BATSMAN.

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